A three member UDRP panel has denied the attempt of Okruzhnost LLC of Penza, Russian Federation, attempt to grab the domain name ifunny.com owned by Six Media Ltd. of Hong Kong, represented by Esquire.com
Here are the facts and findings from the three member panel, which consisted of Gabriela Kennedy, Nicholas Weston and The Hon Neil Brown Q.C.:
The Complainant is a software company that develops mobile applications and websites.
The Complainant launched a website ifunny.mobi and mobile application called iFunny in 2011, which allows users to create and share humorous photos, videos and comics.
The Complainant is the owner of the IFUNNY trade mark registered in the Russian Federation on August 27, 2013 (with a priority date of July 5, 2012), and the IFUNNY trade mark registered in the USA on November 5, 2013 and September 17, 2013.
The Respondent is Six Media Ltd, a Hong Kong company.
Since 2009, the Respondent has operated the website fakeposters.com, which contains humorous posters and images.
In July 2012 the Respondent acquired the Disputed Domain Name.
The Disputed Domain Name resolves to a website that contains humorous content, photos and videos.
In this case, the Disputed Domain Name consists of the generic word “funny”, and the letter “i”, which the Panel accepts is commonly used to refer to the Internet.
The Disputed Domain Name resolves to a website that contains humorous content and photos (“Website”).
The Respondent therefore appears to be using the Disputed Domain Name in a descriptive sense to describe the type of content that is made available via the Disputed Domain Name, i.e. the provision of funny content via the Internet.
As such, in the absence of any direct evidence that the Respondent is targeting the Complainant in any way through use of the Disputed Domain Name, rather than simply using the Disputed Domain Name in a descriptive sense, the Panel is prepared to find that the Respondent’s use of the Disputed Domain Name and the Website constitutes legitimate use under the Policy.
The Panel considers its finding supported by other relevant factors, such as registration of the domain name fakeposters.com in 2009, which also contains generic words or phrases, and the lack of evidence provided by the Complainant as to its fame and well-known status outside of the USA, particularly in Hong Kong where the Respondent is located.
The Panel’s finding is also supported by the fact that the Respondent has been involved in the business of operating a website fakeposters.com which contains humorous content and photos since 2009, at least two years prior to the Complainant’s launch of its IFUNNY products.
The registration and use of the Disputed Domain Name and Website therefore appears consistent with the Respondent’s pre-existing business operations.
In light of the above, the Panel finds that the Respondent has shown that it has rights or legitimate interests in the Disputed Domain Name and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Names were registered and used in bad faith.